Ex parte Callaghan et al.

Board of Patent Appeals and Interferences

May 18, 1998

07613466 (B.P.A.I. May. 18, 1998)

According to Appellants, Robert A. Malkin is also a1
co-inventor. (Paper "A" (Req. FWC App., 7 Nov. 1990) at 1.)
Since the record does not otherwise reflect this fact,
Appellants should comply with 37 CFR § 1.48, as amended at
62 Fed. Reg. 53131, 53185 (Oct. 10, 1997).
Attorney docket no. CASE-78.2
Counsel for Appellants requested a hearing via3
teleconference. Although the examiner asked to present oral
argument pursuant to 37 CFR § 1.194(b), he subsequently waived
his request.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCIS J. CALLAGHAN and WILLIAM VOLLMAN1
____________
Appeal No. 96-2179
Application 07/613,4662
____________
HEARD: 5 May 19983
____________
Before HAIRSTON, TORCZON, and CARMICHAEL, Administrative
Patent Judges.
TORCZON, Administrative Patent Judge.
Appeal No. 96-2179 Page 2
Application 07/613,466
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FINDINGS OF FACT
We have considered the record in light of the arguments
of Appellants and the examiner. Our decision presumes
familiarity with the entire record. A preponderance of the
evidence of record supports each of the following fact
findings.
A. The nature of the case
1. This is an appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-61. We affirm in part.
2. The application on appeal was filed on 7 November
1990 as a continuation of application number 07/173,573, filed
25 March 1988, now abandoned. (Paper "A" at 1.) Originally,
there was a question about whether the present application was
a proper continuation of the '573 application. Papers in the
present application have been sequentially numbered from
Paper 2, although the application has otherwise been treated
as a file-wrapper continuation. As a consequence, there are
two different documents in the file numbered Paper 2 through
Paper 16. Unless otherwise indicated, we are referring to the
numbered paper for the pending application. The examiner
should correct the paper numbering during any subsequent
prosecution.
Appeal No. 96-2179 Page 3
Application 07/613,466
3. At the hearing, counsel confirmed that Pacesetter
Inc. is the real party in interest.
4. The application is entitled "Rate-responsive
pacemaker with closed-loop control". The subject matter of
the invention is means and steps for regulating pacing with
respect to a measured rate control parameter (MRCP) and
adjusting the pacing rate to account for variations in the
MRCP. Claims 38 and 49 (Paper 17 (Prelim. Amdt.) at 2-3)
illustrate the subject matter of the invention:
38. A method of controlling rate-responsive
pacing comprising the steps of periodically
ascertaining the value of a rate control parameter
"RCP" to obtain a measured rate control parameter
"MRCP", said RCP being such that a measured value
thereof is changed in one direction by increases in
stress/exercise and in an opposite direction by
increases in heart rate, generating pacing pulses at
a pacing rate, deriving a target value "target"
which is indicative of changes in said MRCP due to
non-stress/exercise and non-heart rate factors, and
responsive to a change in the difference between
MRCP and target adjusting said pacing rate in a
direction which tends to return said difference to
its pre-change value.
49. A method of controlling rate-responsive
pacing comprising the steps of generating pacing
pulses at a pacing rate, ascertaining the value of a
rate control parameter "RCP", utilizing closed-loop
control for adjusting said pacing rate in accordance
with the value of said RCP, and causing said closed-
loop control to self-adapt to changes in the value
of said RCP which are due to factors other than
stress, exercise and heart rate.
Appeal No. 96-2179 Page 4
Application 07/613,466
B. The rejections
5. The examiner rejects claims 1-61 under 35 U.S.C.
§ 112 as indefinite and as lacking an enabling description.
6. The examiner relies on the following references in
making the remaining rejections:
Wittkampf et al. (Wittkampf) 4,305,396 15 Dec. 1981
Mumford et al. (Mumford) 4,432,360 21 Feb. 1984
Nappholz et al. (Nappholz) 4,702,253 27 Oct. 1987
Callaghan ('900) 4,766,900 30 Aug. 1988
filed 19 Mar. 1986
Callaghan et al. ('497) 4,878,497 7 Nov. 1989
7. Claims 1-37 and claims 38-61 stand rejected under
the doctrine of obviousness-type double patenting in view of
claims 19-29 and claims 1-18, respectively, of the Callaghan
'900 patent.
8. Claims 1-37 also stand rejected under the doctrine
of obviousness-type double patenting in view of claims 1-17 of
the Callaghan et al. '497 patent and Nappholz.
9. The examiner rejected claim 49 under 35 U.S.C.
§ 102(b) as anticipated by Wittkampf.
10. The examiner rejected claims 1, 2, 12, 13, 25-27,
29, 34, 38-41, and 49-51 under 35 U.S.C. § 102(e) as
anticipated by Nappholz.
11. The following claims stand rejected under 35 U.S.C.
§ 103 as unpatentable in view of the indicated references:
Appeal No. 96-2179 Page 5
Application 07/613,466
The integral of the evoked potential. (Paper 14
at 1; Figs. 5 & 6.)
3-7, 14-18, 20-24, 28, Nappholz and Callaghan
30-33, and 35-37 '900;
42, 43, 45-48, 52-57, Nappholz and Callaghan
and 59-61 '900;
8-11 and 19 Nappholz, Callaghan '900,and Mumford; and
44 Nappholz and Mumford.
C. The meaning of terms
12. We agree with the examiner that there is an apparent
inconsistency in a measured parameter that changes in one
direction in response to increased stress or exercise and in
an opposite direction in response to increased heart rate.
Daily experience suggests an increase in stress or exercise
routinely corresponds to an increase in heart rate in a
normally functioning heart. Appellants' specification
discloses the depolarization gradient lends itself to rate4
control in a closed loop because increased emotional or
physical stress and increased heart rate have opposite effects
on this parameter. (Paper 1 at 13.) The specification
continues, however, to explain that this effect appears when
either workload or pacing rate are held constant. (Paper 1
Appeal No. 96-2179 Page 6
Application 07/613,466
Appellants should note that "exercise" is5
consistently misspelled in the figures. (Figs. 8-10 & 14.)
at 13; Figs. 8 & 9.) Indeed, Appellants' invention uses5
closed-loop control to match heart rates to stress levels.
(Paper 1 at 13-14; Fig. 10; see also Paper 18 at 21-24.)
Appellants have not identified any parameter other than the
depolarization gradient that might satisfy the requirements
for the claimed measured parameter.
13. We find that the terms "closed loop system", "closed
loop control", and "self-adapt" have readily discernable
meanings in light of the disclosure and that these terms
appear to be used consistently with their meanings in the
references of record. Appellants have not identified any
definition for these terms peculiar to their disclosure.
14. Appellants suggest that a person of ordinary skill
in the pacemaker art had a master's degree in electrical or
mechanical engineering and a basic knowledge of circulatory
anatomy and physiology. (Paper 18 (2d Rev'd. App. Br.) at 8
n.1.) The examiner does not dispute this suggestion and we
find it plausible for the purposes of this appeal.
Appeal No. 96-2179 Page 7
Application 07/613,466
USP 4,766,900
D. Claims 1-18 and 19-29 of United
States Patent 4,766,900 to Callaghan
15. Callaghan '900 was filed
before the effective filing
date of the present application and
issued to one of the named inventors
of this application.
16. Figure 7 of Callaghan '900
is the "schematic diagram of a pacer
system constructed in accordance with
the present invention". (3:40-41.)
This figure appears to be
structurally very similar to Figure 7
of the present application, which is
the "more complete representation of the illustrative
embodiment of the invention. (Paper 1 at 6.)
17. The following table compares claims 19 and 25 of
Callaghan '900 to claim 25 of the present application with the
addition of numbers from the drawings corresponding to the
claimed structures:
SN 07/613,466 USP 4,766,900
25. A rate-responsive 19. Cardiac pacing
pacemaker 10 comprising apparatus 10 which comprises:
Appeal No. 96-2179 Page 8
Application 07/613,466
means 50 for generating
pacing pulses at a pacing
rate,
means 16 for applying
electrical stimulus pulses
to the heart;
means 54 for ascertaining means 18 for detecting a
the value of a rate-control cardiac event potential;
parameter "RCP", means 54 for integrating the
detected potential over
time to obtain a selected
parameter;
closed-loop control means 192 for storing said
means 50 for adjusting said
pacing rate in accordance means 190 for comparing
with the value of said RCP,
and
selected parameter;
said selected parameter
with a corresponding
selected parameter of at
least one previous
cardiac cycle that has
been stored; and
means 198 for controlling
the rate of said
electrical stimulus
pulses in response to
said comparison.
means 50 for causing said [25. ...means 190 for
closed-loop control means to comparing said selected
self-adapt to the changes in parameter with a target
value of said RCP which are value; and
due to factors other than means 198 for controlling the
stress, exercise and heart
rate.
rate of said electrical
stimulus pulses in
response to said
comparison.]
18. A "[c]ardiac pacing apparatus" (Callaghan '900)
would have implied some "means for generating pacing pulses at
Appeal No. 96-2179 Page 9
Application 07/613,466
a pacing rate" to a person having ordinary skill in the art.
The same basic pulse generating circuit is taught in both
disclosures.
19. The means for comparing and means for controlling
comprise a programmed microcomputer 190. ('900 at 6:65-67.)
It is axiomatic that differently programmed microcomputers are
structurally different machines. In re Lowry, 32 F.3d 1579,
1583, 32 USPQ2d 1031, 1034-35 (Fed. Cir. 1994). On the
present facts, the question of structural equivalence seems a
bit circular given that the relevant hardware involved appears
to be identical. The difference, such as there is, between
the structures is a matter of programming, i.e., in the
process of making the same hardware function differently. No
specific programming is disclosed, only a high-level
description of the programming function. Thus, we must infer
structural equivalence from on the basis of a high-level
functional description.
20. We find that Callaghan '900's means for detecting
and integrating the cardiac event potential is the same as the
presently claimed means for ascertaining RCP. We agree with
the examiner that both the present application and
Callaghan '900 are detecting and integrating the same
Appeal No. 96-2179 Page 10
Application 07/613,466
parameter--evoked potential--to produce the same result--the
depolarization gradient. (Compare '900 at 2:29-53 with
Paper 1 at 4:12-14; see also Callaghan '497 at 7:51-54
and 8:25-66.) The fact that the means in Callaghan '900 are
specified in greater detail does not obscure the fact that the
same structures accomplish the same function in both claims.
21. We find that the means for comparing and controlling
based on a parameter are equivalent to the closed-loop control
means. Again, Callaghan '900 simply defines the same
structures accomplishing substantially the same function in
greater detail. Appellants contend that Callaghan '900 does
not have a closed loop. (E.g., Paper 18 at 16.) We agree
with the examiner that this unsupported contention does not
make sense on its face. Callaghan '900 appears to meet the
definition presented in the third full paragraph on page 10 of
Appellant's second revised brief, quoting I. Singer et al.,
Initial Clinical Experience with a Rate Responsive Pacemaker,
12 PACE 1458, 1459 (1989). To the extent a subtle difference
exists, Appellants have failed to explicate it. Cf. Clintec
Nutrition Co. v. Baxa Corp., 44 USPQ2d 1719, 1723 n.16 & text
(N.D. Ill. 1997) (Court will not look for evidence that party
has failed to present directly).
Appeal No. 96-2179 Page 11
Application 07/613,466
22. Callaghan '900 claims modifying pacing according to
a target instead of the measured parameter. (Claim 25.)
Certainly the approaches of claims 19 and 25 could be combined
for the benefits taught in Callaghan '900 at 2:54-3:7.
Callaghan '900 is, broadly conceived, self-adapting with
respect to the target. The question, however, is whether it
is structurally similar to the claimed self-adapting closed-
loop control means. For this to be true, the presently
claimed self-adapt means would have to be programmed in a
manner that is substantially a combination of the comparing
means and controlling means of Callaghan '900's claims 19
and 25. Callaghan '900 sets forth its algorithms at Figs. 8a-
9b. Although there are several ways that a person having
ordinary skill in the art might combine these algorithms, at
best, there is no suggestion of the "tweeking" indicated in
Fig. 18 of the present application. Consequently, we agree
with Appellants that the pending claims differ in their
treatment of the target value adjustment. (Paper 18 at 15-
16.)
23. These findings are equally applicable to the steps
of claim 49 as well.
Appeal No. 96-2179 Page 12
Application 07/613,466
USP 4,766,900
E. Claims 1-17 of United States
Patent 4,878,497 to Callaghan et al.
24. Callaghan '497 has the same effective filing date--
25 March 1988--as the present application, although they do
not have overlapping chains of
pendency. Cf. In re Berg, ___ F.3d
___, 46 USPQ2d 1226, 1227 (Fed. Cir.
1998) (finding double-patenting
between separate applications filed
the same day). At the hearing,
counsel confirmed that the Office did
not require any restriction between
the inventions of the '497 patent and
the present application.
25. Figure 7 (the "more complete
representation of the illustrative
embodiment of the invention" (1:59-60)) of Callaghan '497
appears to be identical to corresponding Figure 7 of the
present application.
26. The following table compares claim 1 of
Callaghan '497 to claim 25 of the present application with the
Appeal No. 96-2179 Page 13
Application 07/613,466
Counsel confirmed the numbering during the hearing.6
This typographical error occurs in both of the7
independent claims of Callaghan '497.
addition of numbers from the drawings corresponding to the6
claimed structures:7
SN 07/613,466 USP 4,878,497
25. A rate-responsive 13. A rate-responsive
pacemaker 10 comprising pacemaker 10 comprising
means 50 for generating
pacing pulses at a pacing
rate,
means 18 for sensing the
presence of [sic, or] absence7
of an evoked potential;
means 54 for ascertaining means 54 for periodically
the value of a rate control ascertaining the value of a
parameter "RCP", measured rate control
parameter which is based upon
the sensing of an evoked
potential;
closed-loop control means 50 for generating
means 50 for adjusting said
pacing rate in accordance is a function of said MRCP;
with the value of said RCP, and
and
pacing pulses at a rate which
means 50 for causing said
closed-loop control means to
self-adapt to changes in the
value of said RCP which are
due to factors other than
stress, exercise and heart
rate.
Appeal No. 96-2179 Page 14
Application 07/613,466
means 50 responsive to the
failure to sense an evoked
potential following the
generation of a pacing pulse
for controlling the
generation of a back-up
pacing pulse.
27. We find that means for generating pacing pulses at a
pacing rate is implicit in a rate-responsive pacemaker. The
means 50 is not disclosed or claimed in sufficient detail to
move it beyond what would have been known to a person having
ordinary skill in the art at the time of the invention.
28. The disclosures of the present application and
Callaghan '497 are substantively identical. The
correspondences indicated below span the entire specification
excluding the claims:
SN 07/613,466 USP 4,878,497
Paper 1 (page:line) (column:line)
1:8-3:31 2:26-3:61
4:2-31 3:62-4:27
4:33-6:25 1:11-2:16
6:26-65:6 4:28-36:62
The only apparent differences lie in the ordering of the text,
the introduction, the stated objective, and some of the
Appeal No. 96-2179 Page 15
Application 07/613,466
Indeed, it is disturbing that most of the8
differences are cosmetic variations at the beginning of the
disclosures. Such variation, if done for the purpose of
obscuring the relationship between the disclosures, is
ethically suspect. See Berg, ___ F.3d at ____ n.7,
46 USPQ2d at 1231 n.7.
transitional phrases. The figures also appear to be8
identical, right down to the misspelling of "exercise".
29. As we have noted, otherwise identical hardware that
is programmed differently constitutes different structure.
The corollary of this axiom is that identical hardware
identically programmed is structurally identical.
Consequently, we find the means in the appealed claims to
correspond identically to the means in Callaghan '497.
30. Nappholz teaches self-adapting with respect to
minute volume. (3:2-52.) Nappholz would have provided
motivation to a person having ordinary skill in the art to
exploit the inherent self-adapting functions of
Callaghan '497's means 50, even though that function was not
explicitly claimed in the '497 patent.
31. We see no reason why the preceding fact finding
should not be true for the steps of appealed claims 38-61 as
well. The means of Callaghan '497's claims 1-17 perform the
steps of appealed claims 38-61 and thus would have rendered
those steps at least obvious.
Appeal No. 96-2179 Page 16
Application 07/613,466
The Office action of 16 March 1992 (variously9
labeled Paper 6 and Paper 18) at 5 rejects claims 38 and 49 as
anticipated by Wittkampf. The examiner inexplicably failed to
maintain the rejection against claim 38 in his answer. We
treat as withdrawn any rejection that is not repeated in the
examiner's answer. Paperless Acctg., Inc. v. Bay Area Rapid
Trans. Sys., 804 F.2d 659, 663, 231 USPQ 649, 651-652 (Fed.
Cir. 1986); Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
In any case, we are reversing pro forma the art-based
rejections of claim 38.
F. Anticipation of claim 49 by Wittkampf9
32. Appellants argue that Wittkampf does not teach
claim 49's "utilizing closed-loop control for adjusting said
pacing rate in accordance with the value of said RCP, and
causing said closed-loop control to self-adapt to changes in
the value of said RCP which are due to factors other than
stress, exercise and heart rate." We note that these
limitations are written in step-plus-function format.
33. We agree with the examiner that Wittkampf broadly
discloses the functions Appellants claim for their invention.
The examiner does not, however, identify with particularity
the steps in Wittkampf that anticipate, expressly or
inherently, the specific acts or their equivalents
corresponding to the claimed steps. Consequently, we reverse
this rejection of claim 49.
Appeal No. 96-2179 Page 17
Application 07/613,466
G. Anticipation of claims 1, 2, 12, 13, 25-27,
29, 34, 38-41, 49-51 and 58 by Nappholz
34. We note at the outset that the meaning of claims 1
and 38, and their dependent claims 2, 12, 13, and 39-41, are
sufficiently indefinite to test these claims against the
reference. The point of contention is the nature of the rate
control parameter, which is precisely the point at which these
claims are unclear.
35. We agree with Appellants that Nappholz does not
teach the closed-loop control means of claim 25 or the
adjusting step of claim 49. (Paper 18 at 28.) We note that
these claims are written in means-plus-function and step-plus-
function formats, respectively. The examiner argues that
Nappholz's minute volume parameter satisfies the rate control
parameter provisions of the claims, but provides no analysis
of how minute volume would be used with the disclosed
structures or acts. We find that Nappholz does not expressly
or inherently teach the claimed structures or acts.
Consequently, we reverse this rejection of claims 25 and 49,
and of their dependent claims 26, 27, 29, 34, 50, 51, and 58.
H. The teachings of Nappholz and Callaghan '900
36. The examiner relies on Nappholz and Callaghan '900
or Mumford, to reject the remaining claims. As we have
Appeal No. 96-2179 Page 18
Application 07/613,466
already noted, claims depending from claims 1 and 38, in this
case claims 3-11, 14-24, 42, and 43-48, are sufficiently
indefinite to make a prior art analysis pointless. The
rejection of remaining claims 28, 30-33, 35-37, 52-57,
and 59-61 is based solely on Nappholz and Callaghan '900.
37. We have already found that Callaghan '900 teaches
the basic structure and acts of the invention with the
exception of the self-adapting function. We have also already
found that Nappholz teaches the advantages of self-adaption
with respect to a rate control parameter. We find that
Nappholz would have motivated a person having ordinary skill
in the art to modify its use of the depolarization gradient to
implement self-adapting rate control. We do not, however, see
a suggestion in the record on how this would have been
accomplished. Moreover, the combination of these references
does not suggest the specific acts of Appellants' claimed
method in itself or as implemented in programmed means.
38. Neither the examiner nor Appellants have suggested a
range of equivalent structures or acts against which we might
compare the combination. We find the disclosed acts and
corresponding means sufficiently detailed (e.g., a flow chart
covering ten pages with many branches and loops) to admit few
practical equivalents.
Appeal No. 96-2179 Page 19
Application 07/613,466
This presumption is particularly appropriate during10
proceedings before the Office, where an applicant has the
option to amend the claim or the record to overcome the
presumption.
39. Appellants urge no secondary considerations in
support of patentability.
CONCLUSIONS OF LAW
A. Claim construction
1. We presume that a claim written in means-plus-
function or step-plus-function form is governed by the
provisions of the sixth paragraph of section 112 unless the
record unambiguously indicates otherwise. York Prods. v.
Central Tractor Farm & Family Center, 99 F.3d 1568, 1574,
40 USPQ2d 1619, 1623 (Fed. Cir. 1996). We see no
contraindication in this record.10
2. During prosecution, a claim must be construed as
broadly as is reasonable in light of the specification. In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989). This axiom is not, however, license to ignore the
strictures imposed by claiming in means-plus-function or step-
plus-function format. The format permitted under "section 112
¶6 operates to cut back on the types of means which could
literally satisfy the claim language." Johnston v. IVAC
Appeal No. 96-2179 Page 20
Application 07/613,466
Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386-87 (Fed. Cir.
1989).
B. Indefiniteness
3. A claim is indefinite if it fails to apprise those
skilled in the art both of the use and the scope of the
invention or if the language is not as precise as the subject
matter permits. Shatterproof Glass Corp. v. Libbey-Owens Ford
Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985).
Claims must be read in light of the specification, but this
axiom cuts both ways since the specification may reinforce the
appearance of uncertainty. In re Moore, 439 F.2d 1232, 1235
n.2, 169 USPQ 236, 238 n.2 (CCPA 1971).
4. The examiner rejected claims 1 and 38 because "[i]t
is unclear what parameters are encompassed by ['a measured
value thereof is changed in one direction by increases in
stress/exercise and in an opposite direction by increases in
heart rate'] since there are no known parameters that
simultaneously change in opposite directions due to exercise
. . .." (Paper 22 at 4, emphasis added.)
5. We conclude that claims 1 and 38 are indefinite. As
written, these claims require a parameter that correlates to
stress and heart rate in opposite directions when ordinarily
the underlying parameters are directly related. Although the
Appeal No. 96-2179 Page 21
Application 07/613,466
disclosure supports opposite measured responses to changes in
stress and pacing rate when one or the other is held constant,
these additional qualifications are missing from the claims.
We cannot incorporate into these claims the limitations
suggested by the specification. Consequently, the claims as
written encompass the paradoxical situation the examiner has
identified. (E.g., Paper 22 at 12.)
6. Appellants have not separately argued the
indefiniteness of claims 2-24 and 38-48, which depend from
claims 1 and 38, respectively, so we affirm their rejection as
indefinite as well.
7. Since claims 1-24 and 38-48 are indefinite with
respect to a contested limitation, we set aside the other
rejections of these claims as unripe for our determination.
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA
1962); In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970). This course is particularly appropriate in the
present case, where the respective contentions of the examiner
and Appellants depend so heavily on the divergent
interpretations of these claims. We thus reverse the
reference-based rejections of these claims pro forma.
8. With respect to claims 25 and 49, the examiner urges
that the meaning of "rate control parameter", "closed-loop
Appeal No. 96-2179 Page 22
Application 07/613,466
control", and "self-adapt" in these claims is unclear.
(Paper 22 at 4.) According to the examiner, these terms are
not objectionable in themselves, but are unclear as argued.
(Paper 22 at 12-13.) While an applicant's statements in the
prosecution history are relevant to the meaning of a term,
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582,
39 USPQ2d 1573, 1576 (Fed. Cir. 1996), such statements do not
outweigh the effect of the disclosure and objective evidence
of record. The test for indefiniteness is objective, based on
the understanding of a hypothetical person of ordinary skill.
Appellants' subjective intent to claim, even claim badly, does
not control the meaning of a term in the claim. If Appellants
have used these terms inconsistently during prosecution to
avoid prior art-based rejections, these inconsistencies are
better treated in the context of those prior-art rejections.
Consequently, we reverse the indefiniteness rejection for the
remaining claims.
C. Enablement
9. The enablement rejection is similarly based on a
dispute over the meaning of the term "closed loop". As we
have already indicated, on this record this dispute is better
resolved in light of the prior-art rejections. Moreover, we
are reluctant to read faults into the claims based on
Appeal No. 96-2179 Page 23
Application 07/613,466
arguments of counsel that we have already rejected.
Consequently, we reverse the rejection of claims 25-37 and 49-
61 under section 112 as not enabled.
D. Double-patenting - Callaghan '900
10. We presume that a one-way double-patenting analysis
applies for applications filed after 1984. See Berg, __ F.3d
at ___, 46 USPQ2d at 1230. Appellants have not urged any
reason for applying a two-way analysis. Although Appellants
focus on the "concept" of the invention and the examiner
focuses on what is disclosed, case law requires us to
determine "whether the application claims are obvious over the
patent claims." Id., ___ F.3d at ____, 46 USPQ2d at 1229
(emphasis added). The fact that all of the claims being
compared are either means-plus-function or step-plus-function
claims further restricts the reasonable scope of the
comparison.
11. We conclude that claims 25 and 49 are not obvious
over the claims of Callaghan '900 because the claimed process
step of closed-loop control self-adaptation, in itself and as
programmed in the self-adapt means, was not disclosed or
suggested. Even though claims 25 and 49 and the claims of
Callaghan '900 have similar functions and results, the acts of
the self-adapting step and means differ beyond what would have
Appeal No. 96-2179 Page 24
Application 07/613,466
Since a terminal disclaimer filed to overcome this11
rejection would apply to the entire resulting patent and not
simply these claims, we will not enter a new ground of
rejection pursuant to 37 CFR § 1.196(b) for the method claims.
Given our affirmance of the indefiniteness rejection for
claims 1-24, we will not reach those claims either. We
caution the examiner, however, to ensure that a terminal
disclaimer is required in any related applications (e.g.,
applicant-initiated divisionals) with substantially similar
claims. We remind Appellants that our findings in this
opinion would be material to the prosecution of any related
applications. 37 CFR § 1.56(b).
been obvious to a person having ordinary skill in the art.
Consequently, we reverse the double-patenting rejection of
claims 25-37 and 49-61 on the merits.
E. Double-patenting - Callaghan '497
12. Appellants have chosen a prosecution strategy that
places virtually identical disclosures on separate prosecution
tracks. Cf. Berg, ___ F.3d at ___, 46 USPQ2d at 1233. They
have also chosen a claim format in both the present
application and in their patent that forces us to correlate
the claims to nearly identical disclosures. We see no
principled basis by which we can ignore the fact that
separately claimed functions are both programmed into an
identically disclosed means. Consequently, we must affirm the
rejection of claims 25-37 under the obviousness-type double-
patenting doctrine.11
Appeal No. 96-2179 Page 25
Application 07/613,466
F. Obviousness
13. We agree with the examiner that Callaghan '900 and
Nappholz can be combined. Callaghan '900 would have motivated
a person having ordinary skill in the art to a closed-loop
control pacemaker using the depolarization gradient as its
rate control parameter. Nappholz would have motivated a
person having ordinary skill in the art to find a way to make
the depolarization gradient self-adapting. It does not
follow, however, that the artisan is more likely than not to
have arrived at the claimed subject matter. We do not find
sufficient evidence of record to support a conclusion of
obviousness. Accordingly, we reverse this rejection of
claims 28, 30-33, 35-37, 52-57, and 59-61.
DECISION
We affirm the rejection of claims 1-24 and 38-48 under
section 112 as indefinite. The reference-based rejections of
these claims are reversed pro forma.
We reverse the rejection of claims 25-37 and 49-61 under
section 112 as indefinite on the merits.
The rejection of claims 1-61 under section 112 as not
enabled is reversed pro forma.
Appeal No. 96-2179 Page 26
Application 07/613,466
We reverse the rejection of claims 25-37 and 49-61 under
the obviousness-type double-patenting doctrine as obvious
variants of the claims of Callaghan '900.
We affirm the rejection of claims 25-37 under the
obviousness-type double-patenting doctrine as obvious variants
of the claims of Callaghan '497.
We reverse the anticipation rejections of claims 25-27,
29, 34, 49-51, and 58 on the merits.
We reverse the obviousness rejections of claims 28, 30-
33, 35-37, 52-57, and 59-61 on the merits.
Appeal No. 96-2179 Page 27
Application 07/613,466
The time period for taking any subsequent action in
connection with this appeal will be extended only under the
limited circumstances provided in 37 CFR § 1.136(b).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-2179 Page 28
Application 07/613,466
GOTTLIEB RACKMAN & REISMAN, P.C.
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